USPTO Patents Application 10086742

United States Patent and Trademark Office

UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office

Address: COMMISSIONER FOR PATENTS
P.O. Box 1450

Alexandria. Virginia 22313-1430
www.uspto.gov

APPLICATION NO.

FILING DATE

FIRST NAMED INVENTOR

ATTORNEY DOCICET NO. CONFIRMATION NO.

10/086,742

21171

03/04/2002

Yasushi Sugaya

614.1747CD2C

3699

7590 06/21/2006

staas&halseyllp

suite 700

1201 new YORK AVENUE, N.W.
WASHINGTON, DC 20005

EXAMINER

ART UNIT

HUGHES, DEANDRAM

PAPER NUMBER

3663

DATE MAILED: 06/21/2006

Please find below and/or attached an Office communication concerning this appHcation or proceeding.

PTO-90C (Rev. 10/03)

fifficG Action Summsrv

Application No.

10/086,742

Applicant(s)
SUGAYAETAL.

Examiner

Deandra M. Hughes

Art Unit

3663

- The MAILING DATE of this communication appears on the cover sheet with the correspondence address -
Period for Reply

A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE 3 MONTH(S) OR THIRTY (30) DAYS.
WHICHEVER IS LONGER, FROM THE MAILING DATE OF THIS COMMUNICATION.

- Extensions of time may be available under the provisions of 37 CFR 1 .136(a). In no event* however, may a reply be timely filed
after SIX (6) MONTHS from the mailing date of this communication.

- If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.

- Failure to reply within the set or extended period for reply wilt, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any
earned patent term adjustment. See 37 CFR 1.704(b).

Status

1 )S Responsive to communication(s) filed on 02 December 2005 .
2a)^ This action is FINAL. 2b)D This action is non-final.

3) D Since this application is in condition for allowance except for formal matters, prosecution as to the merits is

closed in accordance with the practice under Ex parte Quayle, 1935 CD. 11, 453 O.G. 213.

Disposition of Claims

4) ^ Claim(s) 1-4 and 8-30 is/are pending in the application.

4a) Of the above claim(s) is/are withdrawn from consideration.

5) \Z1 Claim(s) is/are allowed.

6) ^ Claim(s) 1-4 and 8-30 is/are rejected.
?)□ Claim(s) is/are objected to.

8) D Claim(s) are subject to restriction and/or election requirement.

Application Papers

9) n The specification is objected to by the Examiner.

10)n The drawing(s) filed on is/are: a)\3 accepted or b)n objected to by the Examiner.

Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1 .85(a).

Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121(d).
1 1 )□ The oath or declaration is objected to by the Examiner. Note the attached Office Action or form PTO-152.

Priority under 35 U.S-C. § 119

12)n Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 1 19(a)-(d) or (f).
a)n All b)n Some * 0)0 None of:

1 .□ Certified copies of the priority documents have been received.

2. D Certified copies of the priority documents have been received in Application No. .

3. D Copies of the certified copies of the priority documents have been received in this National Stage

application from the International Bureau (PCT Rule 17.2(a)).
* See the attached detailed Office action for a list of the certified copies not received.

Attachment(s)

1 ) □ Notice of References Cited (PTO-892) 4) □ Interview Summary (PTO-41 3)

2) □ Notice of Draftsperson's Patent Drawing Review (PTO-948) Paper No(s)/Mail Date. .

3) □ Infomiation Disclosure Statement{s) {PTO-1449 or PTO/SB/08) 5) □ Notice of Infomial Patent Application {PTO-152)

Paper No(s)/Mail Date . 6) □ Other: .

U.S. Patent and Trademark Office

PTOL-326 (Rev. 7-05) Office Action Summary Part of Paper No./Mail Date 2006061 6

Application/Control Number: 10/086.742 Page 2

Art Unit: 3663

DETAILED ACTION
Response to Arguments
1 . Applicant's arguments filed 5/1 5/06 have been fully considered but they are not
persuasive.

Applicant argues the following:

(A) "It should be understood that the variation in the power of the input light is
a phenomenon that occurs not in the wavelength domain but in the time
domain, and that maintaining the waveform dependence of the gain to be
constant (flat) irrespective of a variation in the input power is also a
function with respect to the time domain." (pg. 9, last paragraph).

(B) "DiGiovanni does not disclose or suggest a level controller which controls
a power level of the WDM optical signal amplified by the first-stage optical
amplifier, as recited, for example, in claim 1 "In the office action, the
Examiner correlates element 36 of DiGiovanni to the claimed level
controller. However, element 36 of DiGiovanni operates as a filter to pass
amplified channels and suppress spontaneous emission." (pg. 10, last
paragraph)

(C) The equation disclosed in column 4, line 50 of DiGiovanni does not
"disclose or suggest that a multi-stage optical amplifier amplifies a WDM
optical signal with substantially equal gain with respect to the wavelengths
of the plurality of the optical signals independently of variation of the
received WDM optical signal..." (pg. 11,3"^ paragraph).

Application/Control Number: 10/086,742 Page 3

Art Unit: 3663

2. Argument (A) is not convincing because, again, the disclosure has not a single
reference to time or any synonym thereof. Applicant appears to be suggesting that the
gain is constant (flat) with respect to time. However, the disclosure explicitly states that
the gain is constant with respect to wavelength. For example, see figures 2, 4, and 6.
Further, everv instance of the word "constant" pertains to a gain that is constant with
respect to wavelength. Further, the passages cited in Remarks of page 9 which the
applicant purports to support a gain constant in time simply cannot be constmed in
anyway to provide enablement for "substantially equal gain, over the wavelengths, and
time...".

3. Argument (B) is not convincing because applicant has ignored the Examiner's
explicit reference to the level controller (see Office Action dated 12/2/05; page 3, line 9).
The Examiner explicit referenced col. 4, line 64 of DiGiovanni that states, "the interstage
filter may have to equalize large gain differences between the channels." This is level
control. Merely stating that the element 36 operates as a filter to pass amplified
channels and suppress spontaneous emission does not comply with 37 CFR 1 .1 1 1 (c)
because they do not clearly point out the patentable novelty which he or she thinks the
claims present in view of the state of the art disclosed by the references cited or the
objections made. Further, they do not show how the amendments avoid such
references or objections.

4. Argument (C) is not convincing because DiGiovanni discloses the net gain
adjustment while attempting to equalize the amplifier gain is:

dGiJL,^) = </G(A,, )SE(Z^, , A^J (col. 4, line 50)

Application/Control Number: 10/086.742

Page 4

Art Unit: 3663

As can be seen above, the gain adjustment Is independent of variation of the received
WDM signal level. Further, col. 4, lines 59-60 disclose that the equation is to
"compensate for the difference between the two channels", i.e. make the gain
independent of the variation of the received channels.

5. The text of those sections of Title 35, U.S. Code not included in this action can
be found in a prior Office action.

6. Claims 1-4 and 8-30 are rejected under 35 U.S.C. 103(a) as being unpatentable
over OiGiovanni (US 5,050,949 published Sept. 24, 1991) in view of Naito (US
5,568,310 filed May 4, 1995).

With regard to claims 1,3-4, 8, 10-12, 14-16, 18-19, DiGiovanni discloses a
multi-stage optical amplifier ffiq. 1: EDFAs #16 and #26 ) for amplifying received WDM
signals (IN) with substantially equal gain (fig. 4 ) with respect to the wavelengths of the
plurality of optical signals M540.5nm and 1538nm) and for outputting the amplified
WDM signal. The multistage amplifier includes a first stage (#16 ) and a second stage
(#26) with a level controller (#36: col. 4. line 64 ) situated between them for controlling
the power level of the WDM signal amplified in the 1^^ stage.

However, DiGiovanni does not specifically disclose a transmitter and receiver.
This is well known in the art. Further, it is taught by Naito (TXandRX). It would have
been obvious to one of ordinary skill in the art (e.g., an optical engineer) to use the
multistage optical amplifier in a transmission system for the advantage of compensating
for power loss during transmission.

Claim Rejections • 35 USC § 103

Application/Control Number: 10/086.742 Page 5

Art Unit: 3663

With regard to claims 2, 9, 13, 17, DiGiovanni discloses:

a first optical transmission line (line through which signals travel ) through
which a WDM optical signal including a plurality of optical signals with
different wavelengths are transmitted (154Q.5nm and 1538nm )
a multi-stage optical amplifier (#16 and #26) to amplify the WDM optical
signal with substantially equal gain (fig. 4 ) over the wavelengths of the
optical signals; and

a second optical transmission line (second arrow on the extreme right of
fig. 1 ) through which the amplified WDM optical signals is transmitted,
wherein the multi-stage optical amplifier includes:
o a front stage optical amplifier (#16 ) which amplifies the WDM optical

signal to produce a front-stage amplified WDM optical signal;
o a level controller (#36; col. 4. line 64 ) which controls a power level of
the front-stage amplified WDM optical signal and outputs a controlled
WDM optical signal (#36 is situated between the two stages ): and
o a rear-stage optical amplifier (#26) which amplifies the controlled WDM
optical signal to produce a rear-stage amplified WDM optical signal.
However, DiGiovanni does not specifically disclose a transmitter and receiver.
This is well known in the art. Further, it is taught by Naito (TX and RX ). It would have
been obvious to one of ordinary skill in the art (e.g., an optical engineer) to use the
multistage optical amplifier in a transmission system for the advantage of compensating
for power loss during transmission.

Application/Control Number: 10/086,742 Page 6

Art Unit: 3663

With regard to claims 20-30, DiGlovanni discloses receiving an input at the 1^*
amplifier stage (fig. 1. IN ) and outputting a signal at the 2"^ amplifier stage ffia. 1 . OUT) .

Claim Rejections - 35 USC § 112

7. The following is a quotation of the first paragraph of 35 U.S.C. 112:

The specification shall contain a written description of the invention, and of the manner and process of
mal<ing and using it, in such full, clear, concise, and exact tenns as to enable any person skilled in the
art to which it pertains, or with which it is most neariy connected, to make and use the same and shall
set forth the t>est mode contemplated by the inventor of carrying out his invention.

8. Claims 3-4, 10-11,1 3-14, 1 7-1 8, 21-22, 25-26, and 28-29 are rejected under 35
U.S.C. 112, first paragraph, as failing to comply with the written description requirement.
The claim(s) contains subject matter which was not described in the specification in
such a way as to reasonably convey to one skilled in the relevant art that the
inventor(s), at the time the application was filed, had possession of the claimed
invention. The added material which is not supported by the original disclosure is as
follows.

Claims 3-4 and 13-14 claim "...with substantially equal gain, over the
wavelengths of the optical signals and time ..." (lines 6 and 3, respectively; emphasis
mine). In pg. 10 of the Remarks filed 10/6/05, applicant points to pg. 2, lines 16-20; fig.
I.pg. 11 , lines 29-34, and pg. 12, lines 17-1 9 to support this amendment. However, the
cited sections do not support the amendment. Further, the Examiner has not been able
to identify a single occurrence of the word 'time' in applicant's specification.

Conciusion

9. THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time
policy as set forth in 37 CFR 1.136(a).

Application/Control Number: 10/086,742 Page 7

Art Unit: 3663

A shortened statutory period for reply to this final action is set to expire THREE
MONTHS from the mailing date of this action. In the event a first reply is filed within
TWO MONTHS of the mailing date of this final action and the advisory action is not
mailed until after the end of the THREE-MONTH shortened statutory period, then the
shortened statutory period will expire on the date the advisory action is mailed, and any
extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of
the advisory action. In no event, however, will the statutory period for reply expire later
than SIX MONTHS from the mailing date of this final action.
1 0. Any inquiry concerning this communication or earlier communications from the
examiner should be directed to Deandra M. Hughes whose telephone number is 571-
272-6982. The examiner can nonnally be reached on M-F, 8:30am-5:00pm.

If attempts to reach the examiner by telephone are unsuccessful, the examiner's
supervisor, Jack Keith can be reached on 571-272-6878. The fax phone number for the
organization where this application or proceeding is assigned is 571-273-8300.

Information regarding the status of an application may be obtained from the
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Status infomiation for unpublished applications is available through Private PAIR only.
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Application/Control Number 10/086.742 Page 8

Art Unit: 3663

USPTO Customer Service Representative or access to tlie automated information
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Primary Examiner
Art Unit 3663